The law says: Use It or Lose It
Texas Border Business
By Jorge F. Millan
After the opposition procedure became effective in August 30, 2016 in the Industrial Property Law, there had been no substantial operational changes that IP lawyers could use in their practice until 2018. First, in the month of May of that year, the information included: (I) in the applications for registration of a trademark, and (II) for documents commencing procedures of cancellation, lack-of-use or simple infringement, were changed twice during that year. Some of them became effective late that year, especially the obligation for a trademark registration to be used. The last and most important modification refers to the enforcement of the obligation of a trademark owner to use its registered trademarks.
The IP law that was born in 1994 when the old NAFTA Trade Agreement was approved by the Congresses of the United States, Mexico, and Canada included the obligation for owners of a Mexican trademark registration to use their mark on their products or services during the ten-year life of their certificate of registration.
However, the use was, in practice, an obligation divided every three years. It was so, because the only danger contemplated in the IP law for an owner was that a third party interested in its registered trademark could file a lack-of-use action only in case the owner had not effectively used it during the three-year period prior to the filing of the action.
In most cases, the registered owner of a trademark could live the ten-year period without using the trademark and not have a problem. So, in practice, the registration served basically as a very difficult obstacle against any other people who were interested in using such mark or a similar one for selling its products or services. This practice lasted for 24 plus years before the changes made in the IP law became effective last year.
Some radio and TV commentators said that the changes were made to enforce the obligation to use a registered trademark by its owner as a result of pressure by the U.S. and Canada during the negotiations of the new called T-MEC free trade agreement that will replace NAFTA.
All new registration applications request the applicant to disclose the first date of use in Mexico, and if they do not, three years after the trademark has been granted. Therefore, they have to file a new document called a “real and effective declaration of use.” If they don´t, the registration will expire automatically.
Upon such expiration, the former owner of the trademark will be forced to file a new registration application if it wants to keep the exclusive use of the name and/or design or both for a second term of three years and repeat this process until the trademark is used or abandoned. The same “real and effective declaration of use” will have to be filed at the time an owner of a trademark registration requests the renewal of an existing registration.
The Mexican Patent and Trademark Office will, of course, charge for each filing of the “real and effective declaration of use”. The filing fees have been set at US$ 65.00 approximately. This government office is one of the most profitable among all the others that it has.
Jorge F. Millan is a fully bilingual (Spanish English / English Spanish) and bicultural attorney at law. He is licensed to practice in México, with vast domestic and international experience as in-house and outside counsel for various corporations and individuals. He is a Texas Border Business Guest Writer. You may contact him at: [email protected]